Facebook, Inc. v. Igor Dolgalev

Case No. D2012-1008

1. The Parties

Respondent is Igor Dolgalev of New York, New York, United States, represented by Lewis & Lin, LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <facebook.info> (the “Domain Name”) is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2012. On May 14 and 16, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On May 16, 2012, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2012. The Response was filed with the Center on June 11, 2012. On June 12, 2012, the Center received a Supplemental Filing from Complainant.

The Center appointed Robert A. Badgley as the sole panelist in this matter on June 26, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the world’s largest social networking service provider, with more than 800 million registered users worldwide. The website “www.facebook.com” is the second most visited website in the world.

Complainant began as a social networking site in February 2004 at Harvard University. It expanded to other universities, including Cornell University, and eventually became a social networking site unmoored to universities and open to the general public.

Complainant holds various trademark registrations for the mark FACEBOOK, including a registration dated January 10, 2006 with the United States Patent and Trademark Office. This registration, in connection with “an online directory information service,” indicates a first use in commerce of the mark FACEBOOK on February 4, 2004.

Initially, Complainant offered its services at “thefacebook.com,” and later acquired the domain name “www.facebook.com” in 2005. Complainant alleges, and has supplied numerous media reports for support, that even in the early days of 2004 the public was referring to Complainant’s service simply as “Facebook,” without the article “the.” A few of the many examples include:

- an April 12, 2004 article in the Wausau Daily Herald saying: “…search YWCA Wausau on Facebook to find us.”

- an April 28, 2004 Associated Press article with the quote: “I’ve had so many people IMing me, adding me to facebook, sending e-mail and signing my guestbook.”

- a May 13, 2004 article in The Dartmouth saying: “The original strategy for adding schools focused on places where many students who were already facebook members had friends.”

- a May 25, 2004 Chicago Tribune article making numerous references to “Facebook” rather than “The Facebook”.

- a May 25, 2004 article in the California Aggie stating: “Facebook.com was launched Feb. 4 by Harvard student Mark Zuckerberg…” This article repeatedly refers to “Facebook” rather than “The Facebook”.

- a September 3, 2004 article in the Brown Daily Herald saying: “The class of 2008 is already well-versed in Facebook-speak…”

- a September 21, 2004 article in the Badger Herald saying: “According to Cornell senior Dan Greenwald, ‘Everyone was real addicted to facebook last semester’.”

According to Complainant, Respondent Igor Dolgalev graduated from Cornell University in 2005 with a bachelor’s degree in biological sciences and computational biology. Complainant further alleges that in 2001, Respondent co-founded a website supplying online users with old versions of various computer programs. Complainant also alleges that a person named “Igor Dolgalev” joined Facebook as early as April 23, 2004. The Facebook page indicates that this member studied at Cornell and lives in Brooklyn, New York. Elsewhere in the Complaint, Complainant alleges: “The Complainant [sic – should be “Respondent”] himself created a Facebook account on April 23, 2004, five months before registering the Domain Name.”

Nowhere in his Response does Respondent deny the allegation that he joined Facebook in April 2004. Rather, Respondent states: “Complainant submits only an un-authenticated document purporting to show that someone with Respondent’s name registered for Complainant’s service.”

The Domain Name was registered on September 25, 2004. The Domain Name was inactive until March 10, 2008. From March 10, 2008 to March 28, 2009, the Domain Name resolved to a blank web page displaying “facebook.info” in the upper left corner.

Since March 28, 2009, the Domain Name has resolved to a website which gives the visitor two options: “twitter” and “other.” Twitter is, of course, another leading social media Internet service. If one clicks the “twitter” link, one who has established a Twitter account may download a “facebook.info Twitter application”. This application permits the user to post blog messages (known as “Tweets” in the Twitter world) and states that the user “just added a post over at http://facebook.info/twitter.” According to Respondent, this “very basic website” was intended solely to allow “users to contribute to discussion forums about any subject.”

Respondent claims, and supports through an affidavit, that at the time he registered the Domain Name he was a student at Cornell University. He claims that the university had a directory of students and their photographs, and students “referred to it as the ‘facebook.’” Respondent states: “Everyone on campus was familiar with the college facebook directory, and students (including myself) often got together to peruse the campus facebook.” An actual copy of an excerpt of the alleged Cornell “facebook” is not annexed to the Response.

Respondent also asserts:

Around the same time [September 25, 2004], I was becoming interested in registering the domain names of generic dictionary words. The domain name registrar 1&1 had a promotion to register domain names with the .info gTLD for about one dollar. Because of this promotion, I registered the .info version of the dictionary word “facebook”.

Respondent did not indicate which other, if any, “generic dictionary words” he registered as domain names based on his claimed newfound interest. In any event, Respondent claims to have had “some ideas” for the development of a website at the Domain Name at the time he registered it. For instance, he claims, “I thought I could use it as some sort of discussion forum, or directory of photographs similar to the Cornell University facebook”.

Respondent denies ever making commercial use of the Domain Name or deriving any income from the Domain Name. He also denies ever trying to sell the Domain Name.

On August 3, 2009, Complainant sent an email to Respondent asserting that Respondent’s registration and use of the Domain Name infringed United States trademark and anticybersquatting laws, and demanding the transfer of the Domain Name. On August 4, 2009, Respondent replied by email. Respondent denied using the Domain Name in bad faith, and asserted that “Facebook is a generic term.” Respondent also noted that he had owned the Domain Name registration for more than four years and Complainant had not asserted any rights to it. Finally, Respondent also wrote:

“At the time of registration of the domain in question, facebook.com belonged to AboutFace. It was purchased by Facebook in 2005. If hypothetically I registered the domain for cybersquatting purposes, it was not targeted at Facebook.”

The record shows no subsequent communication between the parties prior to the filing of this Complaint.

Complainant concedes that the word “facebook” was “originally used as a generic term to describe a directory consisting of individuals’ photographs and names,” but asserts that “it is clear that by the time the Domain Name was registered the term had become distinctive of the Complainant, as illustrated by the numerous press extracts referred to above.”

Respondent also argues that, if he were truly seeking to infringe Complainant’s intellectual property rights in September 2004, he would have registered <thefacebook.info> instead of the Domain Name, since Complainant was known as “THE FACEBOOK” until 2005. In this connection, Respondent asserts that <thefacebook.info> was available for registration on September 25, 2004.

In its Supplemental Filing, which the Panel in its discretion has decided to consider, Complainant points out that <thefacebook.info> in fact was not available on September 25, 2004; it had been registered by a third party one week earlier, on September 18, 2004.

5. Parties’ Contentions

A. Complainant

The salient factual contentions of Complainant are set forth in Section 4 above. Further arguments by Complainant appear, where pertinent, in Section 6 below. Complainant seeks a transfer of the Domain Name.

B. Respondent

The salient factual contentions of Respondent are set forth in Section 4 above. Further arguments by Respondent appear, where pertinent, in Section 6 below.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There is no dispute that Complainant holds rights in the mark FACEBOOK, and that the Domain Name is identical to that mark.

Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent has no rights or legitimate interests in the Domain Name under the Policy. The chief problem for Respondent is that the Panel does not believe his story. In the Panel’s view, Respondent lost a tremendous amount of credibility by failing to rebut the simple and important allegation that he had joined Facebook on April 23, 2004, five months before registering the Domain Name. Rather than admit or deny this critical allegation, Respondent offers an evasive response: “Complainant submits only an un-authenticated document purporting to show that someone with Respondent’s name registered for Complainant’s service.” If Respondent was not in fact the Cornell student from Brooklyn, New York with the name Igor Dolgalev who had signed up with Facebook on April 23, 2004, Respondent should have said so. His evasive comment leads the Panel to regard with suspicion everything Respondent asserts which cannot be independently corroborated.

The Panel does not accept Respondent’s explanation about what motivated his decision to register the Domain Name. Nor does the Panel accept that Respondent registered the Domain Name because it was a “generic dictionary word” and he was interested in setting up an innocuous discussion website or a student photo directory of some sort. In sum, the Panel concludes that there is no credible evidence that any of the grounds for establishing rights or legitimate interests in the Domain Name is present.

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith” :

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Again, Respondent’s lack of credibility colors the Panel’s view of the “bad faith” issue under the Policy. Based on the record, the Panel concludes that Respondent had Complainant’s FACEBOOK mark in mind when registering the Domain Name. There is ample record evidence that, by September 25, 2004 (the date the Domain Name was registered), Complainant’s services had been widely referred to as FACEBOOK. The Panel also finds that Respondent joined Facebook in April 2004, five months before registering the Domain Name.

The Panel also finds that, in 2004, Respondent was computer-savvy and a sophisticated Internet user, having co-founded in 2001 a website supplying online users with old versions of various computer programs. This fact, coupled with Respondent’s actual knowledge of Complainant’s mark in September 2004, leads the Panel to conclude that Respondent registered the Domain Name in bad faith.

As respects bad faith use, the Panel concludes that “passive use” may constitute bad faith under the Policy in appropriate circumstances. See generally Telstra Corp. Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (“Telstra”) (“it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).

The Telstra “passive use” doctrine has typically been applied where the trademark in question is particularly strong. In the instant case, FACEBOOK was a mark not only known to Respondent in 2004, but it was a mark quickly gaining notoriety even in its early months in 2004. Indeed, it had become a famous mark by any measure by the late 2000s. The Panel finds that Respondent registered what he knew to be an increasingly valuable Domain Name and likely decided to hold it until a lucrative offer to buy it came his way or until he could figure out a way to exploit it for gain. On the record here, the Panel concludes, in the words of the Telstra panel, that “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.”

Finally, the Panel must address Respondent’s argument that this Complaint should fail under the doctrine of laches. Essentially, laches is an equitable time-bar to stale claims, and is designed to discourage parties from sleeping on their rights. A laches defense generally requires not only an unreasonably lengthy delay by the party asserting the claim, but also requires a showing that the defending party suffered prejudice as a result of the delay. This Panelist believes that laches can be a viable defense under the Policy in appropriate and limited circumstances. However, laches does not apply here because there is no evidence that Complainant’s delay in bringing this case caused any prejudice to Respondent.

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <facebook.info> be transferred to Complainant.